Ex Parte Brosius et al

Board of Patent Appeals and Interferences

Jan 18, 2012

11044708 (B.P.A.I. Jan. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/044,708 01/28/2005 Jay Brosius SBTZ.0060005 6453
34611 7590 01/19/2012
LAW OFFICE OF DUANE S. KOBAYASHI
P.O. Box 4160
Leesburg, VA 20177
EXAMINER
MANCHO, RONNIE M
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
01/19/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JAY BROSIUS, JAMES B. KILFEATHER and
RICHARD BURTNER
________________

Appeal 2010-001734
Application 11/044,708
Technology Center 3600
________________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER and
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001734
Application 11/044,708

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 10-14, 17-19 and 31-39. Claims 1-9, 15, 16 and 20-30
are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The Claimed Subject Matter
The claimed subject matter pertains to a method for tracking the
location of mobile devices near the Earth’s surface. Independent claim 10 is
illustrative of the claims on appeal and is reproduced below:

10 A location determination method in a mobile terminal,
comprising
a. taking a plurality of observation measurements
from a respective plurality of GPS signals received by the
mobile terminal;
b. if the mobile terminal is in view of a
communication satellite, then transmitting said plurality of
observation measurements to said communication satellite for
delivery to a service operations center for determination of a
location of the mobile terminal; and
c. if the mobile terminal is in view of a cellular
mobile telephone network, then transmitting said plurality of
observation measurements, along with location area
information received from said cellular mobile telephone
network, to a cellular tower in said cellular mobile telephone
network for delivery to a service operations center for
determination of a location of the mobile terminal.

Reference Relied on by the Examiner
Wickstrom US 6,408,178 Jun. 18, 2002

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The Rejection on Appeal
Claims 10-14, 17-19 and 31-39 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Wickstrom (Ans. 3).

ISSUE
Does Wickstrom anticipate a method for locating a mobile terminal
which transmits location measurements to a communication satellite when in
view of the satellite and transmits location measurements to a cellular tower
when in view of a cellular mobile telephone network?

ANALYSIS
Both independent method claims on appeal (claims 10 and 31) require
a mobile terminal to take measurements from a GPS signal and have a dual
mode of communication, i.e. transmit the location data to a communication
satellite and transmit the location data to a cellular tower. Claim 10 requires
that “if” the mobile terminal is in view of a communication satellite, then
these measurements are transmitted to the satellite, and “if” the mobile
terminal is in view of a cellular mobile telephone network, then these
measurements are transmitted to a cellular tower in that network. Claim 31
differs in that it requires that one communication system be “designated as a
preferred communication option” while the other is “designated as a backup
communication option” such that “if” the preferred option is not available,
then the mobile terminal transmits the data via the backup option.
The Examiner finds that Wickstrom anticipates all the claims on
appeal and provides guidance as to where Wickstrom discloses the
limitations of each such claim (Ans. 3-8). The Examiner further notes that
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both claims 10 and 31 contain ‘if’ clauses in their limitations (b) and (c) and
states that they “are optional statements” such that they “do not narrow the
claims because they can always be omitted” (Ans. 8-9, 13 citing MPEP
§ 2106 II C and In re Johnston, 435 F.3d 1381 (Fed. Cir. 2006)). The
Examiner also finds that “Appellant failed to respond to the rejection by
particularly ignoring” certain sections in Wickstrom identified by the
Examiner that relate to a mobile terminal communicating with a satellite and
with a tower (Ans. 9-10, see also 13).
Regarding the “if” clauses found in limitations (b) and (c) of claims
10 and 31, we are not persuaded that these clauses are optional statements as
noted by the Examiner (Ans. 8-9, 13). Optional statements include those
limitations “stated in the permissive form ‘may’” as in Johnston (“said wall
may be smooth”) and “do not narrow the claim because they can always be
omitted” (Johnston 435 F.3d at 1384). Conditional statements, on the other
hand, leave open the situation where the condition is not satisfied; but if the
condition is satisfied, then a stated action occurs (Altiris, Inc. v. Symantec
Corp, 318 F.3d 1363 (Fed. Cir. 2003)). In Altiris, the court stated that “[t]he
body of the claims, by using conditional language in the ‘booting normally’
step (‘if said testing step indicates a normal boot sequence’) indicates that
the ‘testing’ step must occur before the computer boots normally” (Altiris,
318 F.3d at 1372). The court continued stating that “[i]t is the result of this
‘testing’ step that determines whether the automation boot
sequence….occurs, or whether the ‘booting normally’ step occurs” (Id.).
This is consistent with MPEP § 2106 II C relied on by the Examiner which
states “[l]anguage that suggests or makes optional but does not require steps
to be performed…does not limit the scope of a claim” (italics added). Here,
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limitations (b) and (c) are not optional because if their condition is satisfied,
these limitations require certain steps to be performed. For example, if the
mobile terminal is in view of a communication satellite, then transmission of
the location data to the satellite occurs and if the mobile terminal is in view
of a more terrestrial cellular mobile telephone network, then transmission of
the location data to a cell tower occurs. We thus disagree with the Examiner
that limitations (b) and (c) of claim 10 are optional (i.e. are stated in the
permissive form) as found in Johnston.
Appellants contend that Wickstrom does not disclose “dual-mode
transmission by the mobile terminal,” or, more specifically, “a single
radiotelephone that can communicate using two distinct modes of
communication” (App. Br. 14, 15, see also 18, 19; Reply Br. 7, 10).
Appellants contend that “Wickstrom does not disclose a single
radiotelephone that can” transmit location data to a communication satellite
when in view of a satellite and can transmit location data to a cellular tower
when in view of a cellular mobile telephone network (App. Br. 15, see also
19; Reply Br. 7, 10).
We agree that Wickstrom does not disclose a dual-mode of the
transmission of location data by the mobile terminal. The Examiner’s
reference to Wickstrom’s background section readily indicates that it is
known for a mobile terminal to transmit to a satellite or to a terrestrial
system, but the Examiner does not indicate where Wickstrom teaches or
suggests a single mobile terminal that transmits location data via both
systems as claimed (Ans. 3-4, 9). The Examiner relies on Wickstrom for the
finding that terrestrial cellular networks “operate in tandem with satellite
networks as one to facilitate communication there between” and hence the
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Examiner reasons that Wickstrom’s mobile terminal “communicates with a
communication satellite 126 and also with a cellular mobile telephone
network 20” (Ans. 10; Wickstrom 1:57 to 2:25). However, while
Wickstrom’s mobile terminal may have transmitted a signal that was
subsequently relayed between celestial and terrestrial systems as taught by
Wickstrom, Wickstrom nevertheless teaches a mobile terminal that initiates
transmission via one system or the other, not both. The Examiner does not
identify where Wickstrom teaches a single mobile terminal that transmits the
desired data via both modes of communication. To the extent Wickstrom
discloses separate communication networks with different portions of the
claimed location determination method, such disclosure does not anticipate
the claimed invention because none of these embodiments or protocols
individually discloses all of the claimed subject matter arranged in the same
way as recited in the claims. See Net MoneyIN, Inc. v. Verisign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008) (disclosure of two separate protocols in
iKP reference did not anticipate claims where neither protocol contained all
five links arranged and combined in the same way as claimed in the ‘737
patent and district court erred to combine parts of separate protocols of iKP
reference to conclude that claim was anticipated).
Furthermore, and specifically with respect to claim 31, Wickstrom is
understandably silent regarding the designation of a preferred and a backup
communication option as claimed because, as discussed above, Wickstrom
fails to disclose a single mobile terminal having dual-mode transmission
capabilities (see App. Br. 18-19, Ans. 6, 13, Reply Br. 10).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). In view of this requirement for an anticipation
rejection, the Examiner has not identified, either expressly or inherently,
where Wickstrom teaches a mobile terminal “transmitting…to said
communication satellite” and this same mobile terminal “transmitting…to a
cellular tower” when in view thereof as set forth in claim 10 (related
limitations also found in claim 31).
In view of the record presented, we are not persuaded that Wickstrom
anticipates Appellants’ sole independent claims 10 and 31. Accordingly, we
do not sustain the rejection of claims 10-14, 17-19 and 31-39 under 35
U.S.C. § 102(e).

CONCLUSION
Wickstrom does not anticipate a method for locating a mobile
terminal which transmits location measurements to a communication
satellite when in view of the satellite and transmits location measurements to
a cellular tower when in view of a cellular mobile telephone network.

DECISION
The rejection of claims 10-14, 17-19 and 31-39 is reversed.

REVERSED

MP